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Friday, 10 July 2015

This Kat is an avid sports fan and will watch pretty much anything that involves the pinnacle of human athletic achievement (and fast moving objects, as Kats do). Even so, American football has eluded my interests, unless you discuss it within a trade mark context, which has left no one in the dark as the extensive discussion on this very blog [seen here] can attest. Having duked the matter out in the United States Patents and Trademarks Office, and subsequently at the Trademark Trial and Appeal Board, the matter has moved on to the District Court of Virginia, where the decision was handed down only a few days ago.

Pro-Football Inc v Amanda Blackhorse et al. (No. 1:14-cv-01043-GBL-IDD) saw two motions for summary judgment sought in relation to six trade marks owned by the American football team, the Washington Redskins. Having litigated over them for some time now, the marks were invalidated almost a year ago by the Appeal Board after they saw that the marks were disparaging to Native Americans under section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). PFI asserted in their motion seven different causes of action: (i) a declaration of non-disparagement; (ii) a declaration of non-contempt or disrepute; (iii) that section 2(a) of the Lanham Act violates their First Amendment right to free speech; (iv) that the above section is void for vagueness; (v) that section 2(a) violates the Due Process Clause under the Fifth Amendment; (vi) the TTAB order violates the Taking Clause of the Fifth Amendment; and (vii) that the petition by Blackhorse was barred by the doctrine of laches.

As in many trade mark cases one does have to distinguish between the potential loss of a trade mark registration and the use of said mark in commerce. District Judge Gerald Lee, presiding over the case, made this very distinction, highlighting that should the Redskins lose their marks they would still be wholly able to use them in commerce as they have done before, but will lose certain benefits awarded by the US Federal government through their registration.

Constitutional Claims

The court first dealt with the case's Constitutional claims, more specifically causes 3 to 6. PFI's
argument on in impediment of its free speech was handedly denied by Judge Lee who saw that as PFI could still use its marks even if it lost its registration, no speech was suppressed. Had the lack of registration disabled the use of their marks outright, it would be a possible infringement of PFI's free speech. Further, the trade mark registry was deemed to be government speech and thus not protected by the First Amendment. Although PFI's use of the marks is in a commercial context, it was not commercial speech that is protected.

Cute -- or disparaging?

PFI also claimed that section 2(a) was void under the Fifth Amendment, specifically for being too vague, therefore preventing a person in discerning what is prohibited and what isn't. A prima facie reading of the provision does offer proper guidance as to its possible ramifications, and, as noted by Judge Lee, evidence as to what may or may not be disparaging was abundant at the time of the marks registration, leaving nothing unclear or vague in relation to section 2(a). Further, in terms of a potential claim under the Takings Clause, preventing the government from taking private property without just compensation, PFI's claim failed as a trade mark registration has been determined to not constitute private property and thus the claim fails as no property interest exists in the registration.

As such PFI failed on their First and Fifth Amendment challenges, and the court moved onto assess more IP focused challenges by PFI.

Lanham Act Challenges

Although this Kat loves his Constitutional discussions like any other feline, what shone bright in his eyes were the considerations on whether the Redskins' marks would be considered disparaging (specifically causes 1, 2 and 7). Both parties in the matter, per the decision of the TTAB earlier, agreed on two specific questions that needed to be answered in determining whether a mark contains matter that may disparage Native Americans:

1. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?

2. Is the meaning of the marks one that may disparage Native Americans?

An important consideration here, as explained by Judge Lee, is whether the marks may disparage Native Americans from the perspective of the people affected and not through the eyes of the general public. This, however, has to be a substantial composite of Native Americans.

In answering the first question Judge Lee had to determine what the marks (and the term "redskins") meant in the context of this case. The term "redskins" has been associated with Native Americans for quite some time, and the marks themselves depict Native Americans in traditional headdress. In addition the team's marching band and cheerleaders all dress in Native American garb. One can appreciate a clear connection with the marks and Native Americans, the meaning of the matter in question was determined to be a reference to Native Americans.

Football would be much better played with a ball of yarn

The second question posed a much more academic exercise, as the courts generally will not conduct surveys within the affected subset of people. Three primary sources are used in determining whether the meaning of the marks may disparage Native Americans: dictionary definitions and accompanying editorial designations; scholarly, literary and media references; and statements made by individuals or group leaders of the references group regarding the term.

The court put forth a plethora of evidence in all three categories, and ultimately Judge Lee saw that the term "redskins" may disparage Native Americans. Many dictionary definitions highlighted that the term might be offensive or contemptuous towards Native Americans and, although PFI argued the difference in wording would distinguish them from what can be considered as disparaging, Judge Lee quickly rejected their arguments on semantics. The dictionary evidence was further corroborated by scholarly and literary works, which pointed out that the term was in poor standing and was in disfavor with Native Americans. Finally, several Native American group leaders have spoken against the name over the years, and a history of opposition against the name further emphasized the fact, and that the marks may be disparaging to the relevant group.

Judge Lee decided that the marks would be cancelled under section 2(a) of the Lanham Act, and would be removed from the Patent and Trademarks Office's register. However, as was mentioned above, they are still fully able to use them in respect of their team and any other commercial endeavours.

One can appreciate the importance of this issue with Native Americans and, as the legal battle has been drawn out over the years, it seems that this combination of commercial and constitutional issues is surely destined for the Supreme Court.

To my understanding the court differentiated an interest in the trade mark itself (a property right, one could argue) and the registration of that mark, which isn't a property right. Your loss of the registration does not result in the loss of the use of the trade mark, hence no property right is lost.

There wasn't a great deal of discussion around this aspect, but Judge Lee did cite the case of In re International Flavors & Fragrances, Inc., 183 F. 3d 1361 as an authority, which might be of interest for further consideration.

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